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Within six months to two years after the filing date, the
applicant will receive correspondence from the USPTO known as a “first office
action” (sometimes called an “official letter” or “OA”). You can determine an
approximate date when the USPTO will send the first office action by looking online
in a recent Official Gazette under “Examining Corps.” Look for the appropriate
examining group. Also you can call the clerk of the examining group. The
Official Gazette and USPTO phone numbers are available on the USPTO’s website,
www.uspto.gov.

The first office action may:

cite and enclose copies of prior art that the examiner believes shows the applicant’s invention
is obvious or lacks novelty

reject claims

list defects in the specification or drawings, or

raise other objections.

Applications Rarely Allowed in First Office Action

It is very rare that an application is allowed in the first
office action. More often, the examiner rejects some or all of the claims. Some
examiners make a “shotgun” or “shoot-from-the-hip” rejection, flatly rejecting
all claims for questionable reasons. Examiners sometimes do this because of the
time pressures of work at the USPTO or sometimes to force the applicant to
state more clearly the essence of the invention and its distinguishing
features.

EXAMPLE: An office action may include objections such as:

The drawing is not complete because it fails to show
certain features that are recited in the claims. This objection is based on
Patent Rule 1.83(a).

The specification is inadequate because it does not
demonstrate in sufficient detail how to make and use the invention. This
rejection is based on Patent Rule 1.71(b).

Because the specification is inadequate, the examiner
rejects all claims because the claims are based on an inadequate specification.
This objection is based on Section 112 of the patent laws (35 U.S.C. Sec.112).

Amendment in Response to First Office Action

The first office action will specify the time period
(usually three months) by which a response (known as an “amendment”) must be
filed. The response usually includes some or all of the following:

a summary of
the amendments

a review of
the rejections made by the examiner

a review of
the references cited by the examiner

a summary of
how the applicant changed the claims

a statement
of distinctions and arguments as to prior-art references

a request
for reconsideration of the examiner’s position

a discussion
of dependent and other main claims

a discussion
of any technical (Section 112) rejections

a request
that the examiner write the claims, and

a
conclusion.

Most rejections of claims are based upon prior art and are
categorized either as Section 102 rejections (the invention is not novel) or
Section 103 rejections (the invention is novel but obvious). If the rejection
is based on Section 103, the examiner is tacitly admitting that the claims are
novel. If a prior-art reference is strikingly similar to the claim,
the claim is said to “read on” the prior art. In these cases, the claim must be
amended, usually by narrowing it.

If it can be proven that the date of invention is earlier
than the effective date of the reference, the applicant can “swear behind” and
eliminate the reference (USPTO Rule 131). The date of invention is the earliest
of (1) the filing date of the regular application or PPA, (2) the date of
building and testing, or (3) the date of conception followed by diligence. The
effective date of any U.S. patent reference is its filing date; the effective
date of any other reference is its publication date. MPEP Sec.715 and USPTO
Rules provide more details as well as limitations on the applicant’s right to “swear
behind.”

The Applicant’s Duty to Disclose

If you are the applicant, you have a duty to disclose all
information known to you, such as relevant prior art, which bears on the
patentability of the invention. If a prior-art reference is found that is so
similar that it makes your invention unpatentable, your application should be
abandoned. As a general rule, you do not have to (and shouldn’t) admit or state
anything negative about your invention.

Nothing New Added

An applicant can never add new matter to an application (USPTO
Rule 118). New matter is any technical information, including dimensions,
materials, etc., that was not present in the application as originally filed.

The following articles address issues that commonly arise in
patent prosecution: